BOK Financial Corporation v. X.Lei Wang
Claim Number: FA1310001523373
Complainant is BOK Financial Corporation (“Complainant”), represented by Penina Michlin Chiu, Oklahoma, USA. Respondent is X.Lei Wang (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofokahoma.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2013; the National Arbitration Forum received payment on October 8, 2013.
On October 9, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <bankofokahoma.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bankofokahoma.com. Also on October 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <bankofokahoma.com> domain name is confusingly similar to Complainant’s BANK OF OKLAHOMA mark.
2. Respondent does not have any rights or legitimate interests in the <bankofokahoma.com> domain name.
3. Respondent registered and uses the <bankofokahoma.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the BANK OF OKLAHOMA mark, used in connection with financial services, and holds a trademark registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,116,816 registered July 18, 2006).
Respondent registered the <bankofokahoma.com> domain name on December 31, 2012, and uses it to resolve to a website displaying links to Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has rights in the BANK OF OKLAHOMA mark under Policy ¶ 4(a)(i) through its registration with the USPTO (See Reg. No. 3,116,816 registered July 18, 2006). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Respondent’s <bankofokahoma.com> domain name incorporates Complainant’s BANK OF OKLAHOMA mark in its entirely, merely omitting the letter “l” from the word “Oklahoma.” Respondent also removes the spaces from Complainant’s mark and includes the gTLD “.com.” The omission of a single letter from an otherwise identical domain name does not sufficiently differentiate a disputed domain name from a trademark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The omission of spaces between words and the addition of a gTLD are irrelevant to a confusing similarity analysis under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <bankofokahoma.com> domain name is confusingly similar to Complainant’s BANK OF OKLAHOMA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent does not have any rights or legitimate interests in the <bankofokahoma.com> domain name, and asserts that Respondent is not commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “X.Lei Wang” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole, in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by the <bankofokahoma.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant asserts that the <bankofokahoma.com> domain name resolves to a website displaying links to Complainant’s competitors, and presumes Respondent receives click-through revenue from these links. Past panels have found that using a disputed domain name to post links to a complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry). Therefore, the Panel finds that Respondent’s use of the <bankofokahoma.com> domain name to operate a pay-per-click web page with links to Complainant’s competitors does not constitute a bona fide offering of goods or services under Policy ¶ (c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent is typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” Previous panels have also found typosquatting to be evidence of a lack of rights or legitimate interests in the domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Respondent is typosquatting, which provides additional evidence that Respondent does not have any rights or legitimate interests in the <bankofokahoma.com> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has established a pattern of bad faith registration resulting in adverse UDRP decisions and transfers of Respondent’s registered domain names (e.g. Amegy Bank v. X. Lei Wang, WIPO Case No. D2013-0255 (Feb. 4, 2013); Barclays Bank PLC v. X. Lei Wang, WIPO Case No. D2012-2082 (April 5, 2013)). Past panels have found that a respondent who has been involved in prior UDRP proceedings, resulting in the transfer of the disputed domain names, establishes evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel finds that Respondent’s adverse UDRP decisions constitutes evidence of a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii).
Respondent is intentionally attempting to attract Internet users by creating a likelihood of confusion with Complainant’s BANK OF OKLAHOMA mark for Respondent’s own commercial gain. Past panels have found that displaying links to competing businesses via a confusingly similar domain name that takes advantage of Internet users’ mistakes constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that Respondent had knowledge of Complainant’s BANK OF OKLAHOMA mark prior to registering the <bankofokahoma.com> domain name because Respondent’s site advertises banking services and Complainant is well known in the financial and banking marketplace. The Panel agrees and finds that Respondent was aware of Complainant’s mark, further evidence of bad faith under Policy ¶ 4(b)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel notes that the <bankofokahoma.com> domain name is an example of typosquatting, which is itself evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofokahoma.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 11, 2013
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